The opinion of the court was delivered by: Dean D. Pregerson United States District Judge
[Plaintiffs' Opening Claim Construction Brief Filed on June 11, 2010, Markman hearing held on October 15, 2010]
The plaintiff, j2 Global Communications, Inc. ("j2") is the owner of U.S. Patent Numbers 6,208,638 ("'638 Patent"); 6,350,066 ("'066 Patent"); 6,597,688 ("'688 Patent"); and 7,020,132 ("'132 Patent"). j2 alleges that Captaris, Inc. and Easylink Services International Corp. (collectively "Defendants") have offered to sell and provide, have sold and provided, and continue to offer to sell and provide products and services that infringe one or more claims of the patents.
After reviewing the materials submitted by the parties and holding a Markman hearing on October 15, 2010, the court construes the disputed claim terms related to the '066 Patent and the '638 Patent in the manner set forth below.*fn1
I. BACKGROUND AND PATENTS-IN-SUIT
The technology at issue relates to user receipt and transmission of facsimile and telephone messages over the Internet, and of ways to making those messages available to users. The '066 Patent describes a method or system for making messages available to users over the internet. The '638 Patent describes a method for accomplishing reliable transmission of facsimile messages to users in email form. The '688 and '132 Patents, which share common specifications and drawings, relate the ability of the user to send messages via e-mail that can be received at a facsimile machine.
The four patents can generally be grouped into two categories: Patents '066 and '638 relate to a message being received by a user, or an "inbound" message; Patents '688 and '132 relate to a message that a user is sending, or an "outbound" message.
Three of the Patents, '066, '638, and '688, have undergone reexamination. A reexamination certificate issued May 9, 2009, for the '066 Patent, canceling claims 1-35 and adding claims 36-57 as amended versions of claims 1-35; claims 36-57 were determined to be patentable. (May 9, 2009, '066 Reexamination Certificate; App. Sec. 1C.) A reexamination certificate issued December 9, 2008, for the '638 with claims 1 and 13 determined to be patentable as amended; claims 2-12 and 14-22 determined to be patentable as dependent from claims 1 and 13; and newly-added claims 23-40 determined to be patentable. (Dec. 9, 2008, '638 Reexamination Certificate; App. Sec. 2C.) A reexamination certificate issued March 11, 2008, for the '688 Patent, determining that all of claims 1-27 were patentable as originally issued.
II. THE CLAIM CONSTRUCTION PROCESS
A patent infringement analysis involves two steps: (1) determining the meaning and scope of the patent claims asserted to be infringed; and (2) comparing the properly construed claims to the accused device. See generally Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The first step in this sequence is presently before the Court.
"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted). The construction of a particular patent claim term presents a question of law, to be decided by the Court. Markman, 517 U.S. at 391.
The starting point for claim construction is a disputed term's ordinary meaning. Phillips, 415 F.3d at 1313. Ordinary meaning, in the patent claim construction context, is the meaning that a person of ordinary skill in the art would attribute to a claim term in the context of the entire patent at the time of the invention, i.e., as of the effective filing date of the patent application. ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed. Cir. 2009).
The claims, of course, do not stand alone; a person of ordinary skill in the art "is deemed to read [a] claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313-14 (emphasis added). Accordingly, the specification is "the primary basis for construing the claims" in light of the "statutory requirement that the specification describe the claimed invention in full, clear, concise, and exact terms." Id. at 1315 (internal quotation marks omitted) (emphasis added).
In determining the proper construction, the claim language, specification, and prosecution history -- together referred to as the "intrinsic evidence" -- are of paramount importance. Id. at 1315 ("[T]he best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history." (emphasis added) (internal quotation marks omitted)). Consistent with this principle, courts have recognized that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. Id. at 1316. In such cases, the inventor's lexicography governs. Id. In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. Id.
While the court interprets claim terms in light of the specification, it should generally not "import limitations from the specification into the claims absent a clear disclaimer of claim scope." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1373 (Fed. Cir. 2007). "[T]he distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice." Phillips, 415 F.3d at 1323. In walking this "tightrope," Andersen, 474 F.3d at 1373, the court hews to the question of "how a person of ordinary skill in the art would understand the claim terms." Phillips, 415 F.3d at 1323.
Consideration of intrinsic evidence will resolve any claim term ambiguity in most circumstances. See id. at 1313-14. Where it does not, however, the Court may consider certain "extrinsic evidence." See id. at 1317. Expert testimony, for example, may provide helpful background on the technology at issue, explain how an invention works, or establish that a claim term has a particular meaning in the relevant field. See id. at 1319. Dictionaries and treatises may also be helpful in this regard. Id. at 1318. Precedent counsels against reliance on dictionary definitions at the expense of the specification, however, because such reliance "focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent." Id. at 1321; see also Nystrom v. Trex Co., 424 F.3d 1136, 1145 (Fed. Cir. 2005).
The court's ultimate goal is to construe the disputed terms in a manner consistent with the way the inventor defined them and a person of ordinary skill in the art would understand them. "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Phillips, 415 F.3d at 1316 (internal quotation marks ommitted).
V. CONSTRUCTION OF CLAIM TERMS
A. Claim Terms for Patent '066
A signal that includes the contents of a message.
A signal that can include a fax, voice, or data message.
The signal that is transmitted over a telephone network and includes the contents of the message.
j2 offers that a "message signal" is "a signal that can include a fax, voice, or data message." (Pl.'s Opening Brief 10:15-18.) Captaris's would limit "message signals" to signals transmitted over a telephone network. Captaris's definition, however, cannot be reconciled with the plain language of the Patent. Although the Patent requires the incoming call be over a public switched telephone network ("PSTN"), further limitation is not consistent with intrinsic evidence. For example, in the first preferred embodiment, the "message signal" is delivered to a computer via the World Wide Web, not a telephone network. ('066 Patent, Figure 1.) In the "Summary of the Invention," the Patent specification further explains that the message is "transmitted to the user over a network," but does not continue to limit "network" to be exclusively a PSTN. ('066 Patent, 5:49-50.) Captaris' proposed definition would exclude the preferred embodiment and is at odds with the plain language of the patent. Because it is generally error to adopt a claim construction that would exclude one of the patentee's preferred embodiments, the court rejects Captaris' suggestion that "message signal" include the limitation that the message be transmitted via a PSTN. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007).
Other than the dispute as to whether the definition of "message signal" must include reference to a telephone network, the parties agreed at oral argument that, with respect to the remainder of the definition, a "message signal" was "a signal that includes the contents of a message."
THE COURT: Why is it necessary to even mention a fax, voice or data message as opposed to a signal that includes the contents of a message?
MR. SACKS: That would be acceptable, Your Honor.
THE COURT: Okay. Anybody on this side wish to be heard?
MR. CARMODY: Your Honor, yes. There's a couple of points I'd like to raise, both generally and in response to what Mr. Sacks brought up. First of all, in response to your question, it can't just be a signal that includes the contents of the message because it has to be clear that there is something more than just the signal. The patent makes clear that -- or something more than just a message, rather. The patent makes clear that it is a message plus a bunch of correlated data that comes in on that signal. So it's important for the -- for the definition to encompass --THE COURT: Well, when it says "a signal that includes the contents of a message," that just says that the contents of the message are included --
MR. CARMODY: I was just confused. If we're clear on that
point, then I think that's fine.
THE COURT: That's fine. It's a signal that includes the
THE COURT: There's no objection from anybody concerning that
MR. SACKS: Correct, Your Honor. (TR. 6:17-8:1.) Accordingly, the court, for the reasons discussed above, omits reference to a telephone network, and adopts the
following definition of message signal: "A signal that includes the contents of a message."
2. "Hyper-Text Transfer Protocol Deamon"
A program constantly running on a server that communicates according to an http standard.
A program constantly running on a server that communicates according to an http standard.
A software program running on a server in the message storage and delivery system, which communicates with web browser clients by processing and responding to HTTP requests.
j2 asserts that the inventor intended "hyper-text transfer protocol daemon" ("HTTP Daemon") to encompass a constantly running program on a server that communicates according to an HTTP standard. (Pl.'s Opening Brief 12:23-25.) Captaris's definition imports two limitations, (1) that the server on which the program runs be located in the message storage delivery system; and (2) that the program communicate with web browser clients.
As to the second limitation, Captaris would limit the HTTP Daemon to a server that "communicates with web browser clients," i.e. includes an Internet connection or web browser. This limitation would effectively require that the HTTP Deamon communicate over the World Wide Web. The Patent specification does not support Captaris' narrow definition. In fact, the specification clearly notes that the Internet server, which houses the HTTP Daemon, need not be connected to the Internet at all, but "may be connected to other types of networks," for example, "a large private network, such as one established for a large corporation." ('066 Patent, 18:52-57.) The specification also states that while "[i]n general" HTTP is a data access protocol run over . . . the World Wide Web," the invention is "not limited to any particular version or standard of HTTP and thus not to any particular hyper-text transfer protocol deamon." ('066 Patent, 21:45-50.) Absent a basis to limit the definition as Defendants argue, and in consideration of the ordinary meaning of the Patent description, the court adopts j2's proposed construction.
A server that communicates with other servers and/or client computers over a network.
A server that communicates with other servers over a network.
A server residing on a network that receives and handles requests transmitted by client computers, and interfaces with a storage medium to retrieve ...